Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88319036 MAP(Standard Characters, see http://uspto.report/TM/88319036/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION

This Response to Office Action (this “Response”) responds to the Office Action dated May 9, 2019, for the above-referenced mark.

Please amend the description of services as follows:

“non-downloadable computer software for use in the teaching, testing and evaluation of primary, elementary, middle school, high school and college students; non-downloadable computer software for the collection, extraction, organizing, transmission of educational data and information; non-downloadable computer software for providing an online database in the field of educational data processing to provide statistical analysis and reports; non-downloadable computer software to automate educational data analysis, in International Class 42”

REMARKS:

1.                  Recitation of Services.

The Examining Attorney has requested that the recitation of services be amended to provide further clarity.  Specifically, the Examiner has requested that the computer software services listed in International Class 42 be identified as “non-downloadable”.

Accordingly, the Applicant has amended the description of services as requested by the Examiner.  After entry of this amendment, the description of services will read:

“non-downloadable computer software for use in the teaching, testing and evaluation of primary, elementary, middle school, high school and college students; non-downloadable computer software for the collection, extraction, organizing, transmission of educational data and information; non-downloadable computer software for providing an online database in the field of educational data processing to provide statistical analysis and reports; non-downloadable computer software to automate educational data analysis, in International Class 42”

2.                  Conclusion.

Based on the foregoing, the Applicant believes that the application is in condition for acceptance for publication, and such action is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for non-downloadable computer software for use in the teaching, testing and evaluation of primary, elementary, middle school, high school and college students; non-downloadable computer software for the collection, extraction, organizing, transmission of educational data and information; computer software for providing an online database in the field of educational data processing to provide statistical analysis and reports; non-downloadable computer software to automate educational data analysis
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2012 and first used in commerce at least as early as 12/00/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: non-downloadable computer software for use in the teaching, testing and evaluation of primary, elementary, middle school, high school and college students; non-downloadable computer software for the collection, extraction, organizing, transmission of educational data and information; computer software for providing an online database in the field of educational data processing to provide statistical analysis and reports; non-downloadable computer software for providing an online database in the field of educational data processing to provide statistical analysis and reports; non-downloadable computer software to automate educational data analysisClass 042 for non-downloadable computer software for use in the teaching, testing and evaluation of primary, elementary, middle school, high school and college students; non-downloadable computer software for the collection, extraction, organizing, transmission of educational data and information; non-downloadable computer software for providing an online database in the field of educational data processing to provide statistical analysis and reports; non-downloadable computer software to automate educational data analysis
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2012 and first used in commerce at least as early as 12/00/2012 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Ernest G. Bootsma/     Date: 05/16/2019
Signatory's Name: Ernest G. Bootsma
Signatory's Position: Attorney of Record, Oregon Bar Member

Signatory's Phone Number: 503-226-1191

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88319036
Internet Transmission Date: Thu May 16 16:25:13 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019051616251353
1108-88319036-620861ff87f3048ecb7236abfe
91d9441dbe2df6c9a994595b796efd05596922b-
N/A-N/A-20190516131159895305